Louboutin sticks boot in with red sole trade mark win

Fashion designer Christian Louboutin has been handed a victory by the European Court of Justice which ruled that EU law preventing common shapes being trademarked should not apply to Louboutin’s distinctive red soles.

Rival firm Van Haren had claimed that shoe soles should be included in the list of prevented shapes.

In judgment the court noted that the mark does not relate to a ‘specific shape of sole for high-heeled shoes’ and that the description of the mark states that the contour of the shoe does not form part of the mark. Instead it is only intended to show the positioning of the red colour covered by the registration.

The court added: ‘The court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting “exclusively” of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code.’

Elaine O’Hare, senior associate at Guildford firm Stevens & Bolton, said the court ’noted that Louboutin was not seeking to protect the shape of a shoe but only the application of a colour to a specific part of the shoe. It held that a mark such as Louboutin’s cannot be regarded as consisting exclusively of a shape where the main element of the mark is a specific colour.’

She added: ‘The fashion and luxury goods industry will welcome this victory for Louboutin, in particular brands which rely on specific colours, colour combinations or patterns placed on products as a badge of origin.’

Alex Borthwick, of counsel at intellectual property firm Powell Gilbert, said: ’The Louboutin mark is an example of what the EU Intellectual Property Office refers to as a “position mark”: a sign positioned on a particular part of a product in a constant size or particular proportion to the product.’ Borthwick said the decision would assist other position mark owners in removing the possible application of the exclusion. However, such owners will still need to show their marks are distinctive and that consumers do not perceive the mark as solely decorative or functional.

The case was referred to the European Court of Justice by the District Court of The Hague and will now return to the Netherlands court.